USPTO Patents Application 09827487

ode: AP.PRE.REQ pto/sb/33 (07/05)

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PRE-APPEAL BRIEF REQUEST FOR REVIEW

Docket Number (Optional)

112740-207

I hereby certify that this corespondence is being deposited with the
United States Postal Service with sufficient postage as first class
mail in an envelope addressed to "Mail Stop AF, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450" [37 CFR

on

February 3 r 2006

Signature

Typed or printed
name

Renee Street

Application Number

09/827,487

Filed

August 9, 2001

First Named Inventor

Thomas Brumm et al.

Art Unit

2661

Examiner

Michael J. Moore, Jr.

Applicant requests review of the final rejection in the above-identified application. No amendments are being filed with
this request.

This request is being filed with a notice of appeal.

The review is requested for the reason(s) stated on the attached sheet(s).
Note: No more than five (5) pages may be provided.

I am the

| | applicant/inventor.

n

□

assignee of record of the entire interest.

See 37 CFR 3.71 . Statement under 37 CFR 3.73(b) is enclosed.

(Form PTO/SB/96) Typed or printed name

attorney or agent of record.

Registration number 48,196 . 312-807-4208

Telephone number

attorney or agent acting under 37 CFR 1.34.

Registration number if acting under 37 CFR 1 .34 _____ : February 3, 2006

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Code: AP.PRE.REQ

PTO/SB/33 (07/05)
Approved for use through xx/xx/200x. OMB 0651 -OOxx
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE

Docket Number (Optional)

PRE-APPEAL BRIEF REQUEST FOR REVIEW

112740-207

I hereby certify that this corespondence is being deposited with the
United States Postal Service with sufficient postage as first class
mail in an envelope addressed to "Mail Stop AF, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450" [37 CFR

Application Number

09/827,487

Filed

August 9, 2001

on February 3. 2006

Signature

First Named Inventor

Thomas Brumm et al.

Art Unit

Examiner

Typed or printed

name Renee Street

2661

Michael J. Moore, Jr.

Applicant requests review of the final rejection in the above-identified application. No amendments are being filed with
this request.

This request is being filed with a notice of appeal.

The review is requested for the reason(s) stated on the attached sheet(s).
Note: No more than five (5) pages may be provided.

I am the

| | applicant/inventor.

I I assignee of record of the entire interest.
1 1 See 37 CFR 3.71 . Statement under 37 CFR 3.73(b) is enclosed.

□

(Form PTO/SB/96) Typed or printed name

attorney or agent of record.

Registration number 48,196 312-807-4208

Telephone number

attorney or agent acting under 37 CFR 1.34,

Registration number if acting under 37 CFR 1.34 February 3, 2006

Date

NOTE: Signatures of all the inventors or assignees of record of the entire interest or their representative(s) are required.
Submit multiple forms if more than one signature is required, see below*.

•Total of \ _ forms are submitted.

This collection of information is required by 35 U.S.C. 132. The information is required to obtain or retain a benefit by the public which is to file (and by the
USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11, 1.14 and 41.6. This collection is estimated to take 12
minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the
individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the
Chief Information Officer, U.S. Patent and Tradeamrk Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND
FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Mail Stop AF, Commissioner for Patents, P.O. Box 1450, Alexandria VA
22313-1450.

If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant(s): Thomas Brumm et al.

Appl.No.: 09/827,487

Conf.No.: 5738

Filed: August 9, 2001

Title: SYSTEM FOR CONNECTING TELECOMMUNICATION EQUIPMENT TO A

PACKET-SWITCHING TELECOMMUNICATION NETWORK

Art Unit: 2661

Examiner: Michael J. Moore, Jr.

Docket No.: 112740-207

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

PRE- APPEAL BRIEF REQUEST FOR REVIEW

Sir:

This request is submitted in response to the Final Office Action dated August 3, 2005,
and Advisory Action dated November 29, 2005. This request is filed contemporaneously with
USPTO form PTO/SB/33, "Pre- Appeal Brief Request for Review" and form PTO/SB/31,
"Notice of Appeal."

Remarks begin on page 2 of this paper.

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Notice of Appeal and Pre- Appeal Brief Request
Responsive to Advisory Action dated November 29, 2005

REMARKS

Claims 1 and 3-27 are pending in the present application. Claims 1, 21, 24 and 26 were
amended in this response to correct minor informalities. No new matter has been introduced as a
result of the amendment.

Claims 1 and 3-27 were rejected under 35 U.S.C. §103 (a) as being unpatentable over
Rose et al. (US Patent 6,396,840) in view of Ress et al (US Patent 6,885,658).

The cited art, alone or in combination, does not disclose the use of first and second
signaling data, respectively coupled to packet-switched and line-switched communications
network "wherein the second signaling data [of the line-switching communication network] is
transmitted in the packet-switching communications network instead of the first signaling data
[of the packet-switched communication network] when the second signaling data cannot be
converted to the first data" as recited in claim 1, and similarly recited in claims 21, 24 and 26.

The Office Action conceded that Rose fails to teach the aforementioned limitations.
However, the Office Action then erroneously relies upon the teaching of Ress to formulate the
obviousness rejection. Ress discloses interworking agents that communicate with each other
according to a protocol independent format referred to as the "agent interworking protocol"
(AIP). The agent interworking protocol represents a superset of the messaging capabilities of all
protocols to be supported within the packet network (col. 6, lines 21-37). The agent networking
protocol is used by the system of Ress to transfer message data (SIP, MGCP, H.323), and not
signaling information, according to a mapped protocol. In col. 9, lines 2-30, Ress discloses that
the internetworking relates to the protocol of the message (H.323) that is tunneled (i.e., not
converted), and not the signaling (H.245). The agent of Ress checks to see if the specific
signaling is available, and if so, transfers the message data in a converted or native format - if
the signaling is not supported, the data is simply discarded (col 10, lines 35-41).

Regarding the Advisory Action, Applicant concedes that Ress generally discloses
signaling between the agents and a MGCP gateway (col. 11, lines 59-67). However, the
disclosure relied upon by the Examiner does not teach the optional (i.e. second instead of the
first) sending of signaling data when line switched signaling data (second signaling data) cannot

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Appl. No.: 09/827,487

Notice of Appeal and Pre- Appeal Brief Request
Responsive to Advisory Action dated November 29, 2005

be converted to packet-switched data (first signaling data). In fact, the entire disclosure of Ress
is premised in the exchange of IP telephony protocols - line-switched signals are not even
addressed. Furthermore, the H.245 signaling disclosed in col. 9, lines 17-30 merely discloses
that message tunneling using H.245 signaling is accomplished by sending "H.245 indications"
between two H.323 devices, where the H.245 signaling indicates terminal capabilities of the
endpoint, and the agent acknowledges the message (i.e., the message goes through, see col. 12,
line 57 - col. 13, line 6). The H.245 terminal capability messages and the AEP CPG messages
are then combined into a multipart message, where if one or the other message protocols are not
supported, they will be discarded (col. 13, lines 1-6). This disclosure cannot be interpreted as
meaning that the H.245 message is being converted to ADP CPG messages to establish optional
transmission. Furthermore, as discussed previously, both the H.245 message and AIP CPG
messages as relied on in the embodiments cited by the examiner are transmitting in the packet-
switched network (col 6, lines 44-51).

Moreover, Applicants submit that there is no teaching, suggestion or motivation for one
of ordinary skill in the art to combine the Rose and Ress references in the manner suggested in
the Office Action. In making a determination that an invention is obvious, the Patent Office has
the initial burden of establishing a prima facie case of obviousness. In re Rijckaert, 9 F.3d 1531,
1532, 28 U.S. P.Q.2d 1955, 1956 (Fed. Cir. 1993). "If the examination at the initial stage does
not produce a prima facie case of unpatentability, then without more the applicant is entitled to
grant of the patent." In re Oetiker, 24 U.S.P.Q.2d 1443, 1444 (Fed. Cir. 1992).

The teaching or suggestion to make the claimed combination and the reasonable
expectation of success must both be found in the prior art, and not based on applicant's
disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). The initial burden is
on the examiner to provide some suggestion of the desirability of doing what the inventor has
done. "To support the conclusion that the claimed invention is directed to obvious subject
matter, either the references must expRessly or impliedly suggest the claimed invention or the
examiner must present a convincing line of reasoning as to why the artisan would have found the
claimed invention to have been obvious in light of the teachings of the references." Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985). When the motivation to combine the
teachings of the references is not immediately apparent, it is the duty of the examiner to explain

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why the combination of the teachings is proper. Ex parte Skinner, 2 USPQ2d 1788 (Bd. Pat.
App. & Inter. 1986). (see MPEP 2142).

Further, the Federal Circuit has held that it is "impermissible to use the claimed invention
as an instruction manual or 'template' to piece together the teachings of the prior art so that the
claimed invention is rendered obvious." In re Fritch, 23 U.S.P.Q.2d 1780, 1784 (Fed. Cir.
1992). "One cannot use hindsight reconstruction to pick and choose among isolated disclosures
in the prior art to deprecate the claimed invention" In re Fine, 837 F.2d 1071 (Fed. Cir. 1988).

Moreover, the Federal Circuit has held that "obvious to try" is not the proper standard
under 35 U.S.C. §103. Ex parte Goldgaber, 41 U.S.P.Q.2d 1172, 1177 (Fed. Cir. 1996). "An-
obvious-to-try situation exists when a general disclosure may pique the scientist curiosity, such
that further investigation might be done as a result of the disclosure, but the disclosure itself does
not contain a sufficient teaching of how to obtain the desired result, or that the claim result would
be obtained if certain directions were pursued." In re Eli Lilly and Co., 14 U.S.P.Q.2d 1741,
1743 (Fed. Cir. 1990).

As discussed above, the Ress reference the disclosure contemplates the use of a protocol-
independent agent interworking protocol to correlate disparate protocols being used across a
gateway to ultimately provide a protocol-neutral system. In contrast, Rose is specifically
directed to routing calls between narrow-band and broad-band ISDN, and further provides
already-translated messaging and signaling (col. 8, lines 22-36; col. 9, lines 6-22). There is
simply no teaching, suggestion or motivation for one having ordinary skill in the art to rely on
the teaching in Ress when considering the teaching of Rose, In fact, there is no provision in Rose
whatsoever that would suggest the use of a protocol-neutral configuration or AIP messaging such
as that taught in Ress, without relying on impermissible hindsight. Moreover, it is not
understood how a configuration such as that in Ress would even be incorporated into the
teaching of Rose.

In light of the above, Applicant respectfully submits that claims 1 1-20 of the present
application are both patentable over the art of record, and respectfully requests that a timely
Notice of Allowance be issued in this case. If any additional fees are due in connection with this
application as a whole, the Office is authorized to deduct said fees from Deposit Account No.:
02-1818. If such a deduction is made, please indicate the attorney docket number (01 12740-207)
on the account statement.

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Appl. No.: 09/827,487

Notice of Appeal and Pre-Appeal Brief Request
Responsive to Advisory Action dated November 29, 2005

Respectfully submitted,

Peter Zura (J
Reg. No. 48,196
Customer No.: 29177
Phone: (312) 807-4208

Dated: February 3, 2006

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